In Malaysia, the primary legislation governing trade marks and copyrights are as follows.

Trade Marks

The Trademarks Act 2019 (the “TMA 2019”) and the Trademarks Regulations 2019 (the “Regulations”).

Unregistered trade marks are protected in Malaysia under the common law tort of passing off. Similar to many other jurisdictions around the world, the protection of unregistered trade marks is relatively limited as compared to their registered counterparts.

Copyrights

The Copyright Act 1987 (the “CA 1987”).

Copyright protection subsists automatically in works upon creation, and without the need for registration, so long as the conditions set out in the CA 1987 in relation to the qualification for copyright protection are satisfied.

Trade Marks

Malaysia is a member of the following main trade marks treaties and conventions:

• the Paris Convention for the Protection of Industrial Property;
• the Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS);
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
• the Madrid Agreement and Madrid Protocol.

Foreign trade marks belonging to a person from a Convention country (ie, a country which is a member of a multilateral treaty relating to trade marks to which Malaysia is also a party) are entitled to protection without registration in Malaysia if it is a well-known mark.

Copyright

Malaysia is a member of the following main copyright treaties and conventions:

• the Berne Convention;
• the Budapest Treaty;
• the Marrakech Treaty; and
• the World Intellectual Property Organisation Copyright Treaty.

Types of Trade Marks

The types of trade marks recognised in Malaysia are a:

• trade mark;
• collective mark; and
• certification mark.

A trade mark is defined as a sign in the form of a letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods or their packaging, colour, sound, scent, hologram, positioning, and/or sequence of motion, which is capable of being represented graphically and which is capable of distinguishing the goods or services of one undertaking from those of others.

Shape marks are registrable in Malaysia provided that they do not consist exclusively of:

• a shape resulting from the nature of the goods;
• a shape necessary for a technical result; or
• a shape that adds substantial value to the goods.

In respect of trade marks containing the name of another person, whether living or dead, the applicant is required to provide the Registrar of Trademarks with a letter of consent from that person, if living, or of the representative of that person if deceased.

Under Section 72(1) of the TMA 2019, a collective mark distinguishes goods or services of association members and is governed by the First Schedule of the TMA 2019, which covers registration, use and infringement rules.

Section 73(1) of the TMA 2019 defines certification marks as signs indicating that goods or services meet specific criteria, such as quality or origin. Their registrability is governed by the Second Schedule of the TMA 2019.

Geographical indications (GIs) are governed by the Geographical Indications Act 2022. Unlike trade marks, GIs cannot be created but are recognised based on the natural link between the product and its origin. GIs identify the product’s region rather than a specific commercial enterprise, and all producers in that region may use the GI if their goods meet the established standards.

Industrial designs are generally protected under the Industrial Designs Act 1996. Designs or product packaging can be protected by way of trade mark protection so long as they can function as a source identifier used to distinguish one’s goods and services from those of other traders.

Registrability of Specific Marks

Trade marks containing special emblems, such as national flags or royal arms are not registrable unless the applicant provides consent from the relevant authorities.

Section 23(5)(h) of the TMA 2019 prohibits the registration of a trade mark that contains a word which is the commonly used or accepted name of a single chemical element or chemical compound, and it extends to words which are declared by the World Health Organisation as an international non-proprietary name.

Regulation 4(1) of the Regulations also prohibits the registration of trade marks that include names, initials or flags of international organisations or member countries.

Well-Known Marks

Under Section 76 of the TMA 2019, a well-known mark will be entitled to protection in Malaysia regardless of whether the mark is registered or is subject to a pending application in Malaysia, and whether or not the proprietor of the mark carries on business, or has any goodwill, in Malaysia.

Elements Required to Qualify for Trade Mark Protection

Under Section 3(1) of the TMA 2019, the following elements are required to qualify for trade mark protection:

• a sign;
• capable of being represented graphically; and
• capable of distinguishing goods or services of one undertaking from those of other undertakings.

The sign itself must be inherently capable of being distinguished (inherently distinctive). The sign can be considered distinctive if consumers are able to identify the goods or services bearing the sign as originating from a particular source because of the use made of the sign. The sign must be factually distinctive, although not inherently distinctive.

For a trade mark to be registrable, it must not fall within any of the absolute grounds of refusal under Section 23(1) of the TMA 2019, whereby the Registrar of Trademarks will refuse the registration of: 

• signs which are not capable of being represented graphically and not capable of distinguishing goods or services of one undertaking from those of other undertakings;
• trade marks which are devoid of any distinctive character;
• trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, other characteristics of goods or services or the time of production of goods or of rendering of services; or
• trade marks which consist exclusively of signs or indications which have become customary in the current language of the territory or in the bona fide and established practices of the trade.

Proving Acquired Distinctiveness

A sign can be considered as factually distinctive through use ie, acquired distinctiveness. Under Section 23(2) of the TMA 2019, the Registrar of Trademarks will not refuse to register an application of a trade mark if, before the date of application for registration, the trade mark has in fact acquired a distinctive character as a result of its use.

Accordingly, signs which are descriptive or laudatory may be registered as trade marks if they are shown by evidence to be factually distinctive. In this case, evidence of use is necessary to prove factual distinctiveness.

Some of the criteria to determine whether a trade mark has acquired distinctiveness in Malaysia are the duration and extent of use (continuous and widespread use over time), whether or not the mark functioned as a trade mark and whether the continuous and widespread use of the trade mark makes the trade mark distinguishable in law.

Registered Trade Marks

Under Section 48(1) of the TMA 2019, the registered proprietor of a trade mark has exclusive rights to use and authorise the use of the trade mark for the goods or services for which it is registered, as well as to seek relief for infringement. These rights begin upon registration and last throughout the term of a trade mark.

Unregistered Trade Marks

The owner of an unregistered trade mark can enforce its rights by pursuing claims for passing off. The TMA 2019 also protects well-known unregistered trade marks by refusing registration of similar trade marks.

Section 7 of the TMA 2019 defines trade mark use as including visual or non-visual representations, use on goods, statements about services or aural representations.

Under Section 54(2) of the TMA 2019, use in the context of infringement can include: 

• applying the sign on the goods or their packaging;
• offering or exposing goods for sale under the sign;
• putting goods on the market under the sign;
• stocking goods for the purposes of selling them;
• offering or supplying services under the sign;
• importing or exporting goods under the sign; and
• using the sign on invoices, catalogues, commercial documents, etc.

Under Section 55(1)(b) of the TMA 2019, a person does not infringe a registered trade mark if they use a sign in good faith to describe the characteristics of goods or services, such as origin, quality or purpose.

There is no legal requirement to use a symbol to denote a registered trade mark in Malaysia. However, it is an offence to use the ® symbol for trade marks that are pending or unregistered in Malaysia and if found guilty, the offender will be liable to a fine not exceeding MYR10,000.

Applicants may use the trade mark symbol to indicate that the sign is used as a trade mark, but this is optional.

Logos can be protected as artistic works under the CA 1987, meaning trade marks can also benefit from copyright protection in Malaysia.

See 2.1 Types of Trade Marks on the registration of surnames. The CA 1987 and the TMA 2019 do not explicitly address interactions between trade marks and moral rights. Trade mark and copyright laws operate independently.

Types of Copyrightable Works

Sections 7 and 8 of the CA 1987 grant protection to literary works, musical works, artistic works, films, sound recordings, broadcasts and derivative works.

Mutual Exclusivity on Protection over Industrial Designs

Section 7(5) of the CA 1987 precludes copyright protection of industrial designs which are registered under any law related to industrial designs. Industrial designs are protected by the Industrial Designs Act 1996 instead.

The elements to qualify for copyright protection are set out in the CA 1987. They are as follows.

• Sufficient effort is expended to make the work original in nature.
• The work is written down, recorded or otherwise reduced to material form.
• There is a requirement for the copyright to be connected to Malaysia. This can be because:
1. the author is a qualified person (ie, a citizen or permanent resident in Malaysia or a body corporate established in Malaysia);
2. the work was first published in Malaysia; or
3. the work was created in Malaysia.

Definition of an “Author”

Section 3 of the CA 1987 defines an “author” for the following categories of works as:

• the writer or maker of the works for literary works;
• the composer of the works for musical works;
• the artist of the works for artistic works (other than photographs);
• the person by whom the arrangements for the taking of the photographs were undertaken for photographic works;
• the person by whom the arrangements for the making of the film or recording were undertaken for films or sound recordings;
• the person transmitting the programme, if they have responsibility for the selection of its contents or any person providing the programme who makes the arrangements necessary for its transmission for broadcast with the person transmitting it; and
• the person by whom the work was made for any other works/cases.

Work Made for Hire

Section 26(2) of the CA 1987 provides that:

• works created in the course of the author’s employment will be deemed to be automatically transferred to the author’s employer unless otherwise agreed by the parties; and
• copyright arising from commissioned works will vest in the person who commissioned the work, subject to any contrary agreements between the parties.

Limitation of Authorship to Humans

The current wording of the CA 1987 primarily leans toward addressing rights of individuals and legal entities. Section 10 of the CA 1987 provides that copyright subsists in every work eligible for copyright of which the author (or in the case of a work of joint authorship, any of the authors) is, at the time when the work is made, a “qualified person”.

A “qualified person” is defined by the CA 1987 as:

• a person who is a citizen of, or a permanent resident in Malaysia in relation to an individual; and
• a body corporate established in Malaysia and constituted or vested with legal personality under the laws of Malaysia in relation to a body corporate.

While this issue remains untested in the Malaysian courts, the existing legal framework limits the scope of a “qualified person” for copyrighted works to natural persons.

Joint Authorship

Joint authorship is statutorily recognised in Malaysia. A “work of joint authorship” is defined under Section 3 of the CA 1987 as “work produced by the collaboration of two or more authors in which the contribution of each author is not separable from the contribution of the other author or authors”.

As the CA 1987 and other regulations are silent on the determination of ownership percentages in regard to joint authorship works, percentages are determined by way of agreement between copyright owners themselves.

Provided that the joint authorships are awarded copyright ownership over the works, they are at liberty to exercise all rights tied to the copyright rights (see 3.4 Copyright Rights). Section 27 of the CA 1987 provides that the fees received by any of the copyright owners following an assignment or licence will be divided equally between all of the co-owners unless otherwise agreed by the parties.

Under the CA 1987, a copyright owner has the exclusive right to administer control over the management of their works, such as to act against any infringement against their copyrights, as well as rights to issue licences for the copyright. The economic rights of a copyright owner include the right to control:

• the reproduction in any material form in Malaysia;
• the communication to the public rights in Malaysia;
• the performance, showing or playing to the public rights in Malaysia;
• the distribution of copies by sale or transfer of ownership in Malaysia; and
• the commercial rental to the public in Malaysia.

Moral Rights

Paternity rights

Section 13(2) of the CA 1987 enables copyright owners to claim ownership over the originality of the works. Appropriate credit is to be provided to the source and author of the work for works commercially used, referenced, copied, included, showcased or shared with the public.

Integrity rights

Section 25(2) of the CA 1987 protects copyright owners by providing them with authority to, inter alia, prohibit any unauthorised user from misrepresenting the work as that belonging to another author, or to significantly distort or modify the original work to a degree as to negatively impact the reputation of the original author.

Term of Protection in Malaysia

The term of protection is as follows.

• The life of the author plus 50 years after their death for literary, musical or artistic works.
• 50 years from the year of first publication for films.
• 50 years from the year of first performance, or from the year the performance was fixed in a sound recording for sound recordings and performer.
• 50 years from the making of the first broadcast for broadcasts.

Termination of Copyright

Copyright protection (where entitled) is awarded as of right and would remain valid until the expiry of the term of protection of the work in question. Given the lack of a copyright registration regime in Malaysia, there are no specific means provided for terminating a copyright.

In Malaysia, all body corporates intending to operate as Collective Management Organisations (CMOs) must first be declared as a CMO by the director general of the Intellectual Property Office of Malaysia (MyIPO). These CMOs are governed by the CA 1987 and Copyright (Collective Management Organisation) Regulations 2022.

CMOs in Malaysia primarily administer functions to license copyrighted work, collect and distribute royalties and initiate enforcement actions against copyright infringements on behalf of copyright owners.

The existing CMOs declared by MyIPO cover a wide range of member representations, such as songwriters, composers, music publishers, recording companies and performers, writers and authors within the publication industry.

Copyright registration is not mandatory for works to qualify for copyright protection in Malaysia. However, copyright owners may apply for a Copyright Voluntary Notification (CVN), enabling the copyright owner to rely on the notification issued by MyIPO as prima facie evidence of ownership of the copyrighted work.

All CVNs are entered in the copyright register managed by MyIPO and are publicly accessible through MyIPO’s IP Online platform. See 3.2 Essential Elements of Copyright Protection.

All foreign copyright owners are required to appoint a local representative to assist with filing the necessary CVN applications with MyIPO.

The CA 1987 does not provide any requirements for the use of copyright notices and symbols.

To initiate a CVN application, the following forms have to be filed with MyIPO.

Form CR-1 (Information of Work and Applicant)

The following information must be included:

• the title of the work (in its original language);
• a translation and transliteration (if the title of the work is not in Bahasa Malaysia or English);
• an electronic copy of the work (no more than 3GB); and
• the details of the publication of the work, author, owner and licensee (where applicable).

Form CR-3 (Appointment of Representative (if Applicable))

The details of the representative must be provided.

Filing Fees (as of December 2024)

The current fee structure is as follows:

• Form CR-1 (MYR200);
• Form CR-3 (MYR30);
• administrative fees (for forms filed manually (MYR50); and
• for a deposit of an electronic work for every additional 1GB after 3GB (MYR20).

Refusal of Registration

Due to the lack of a copyright registration regime in Malaysia, there are no examination and appeal processes.

Correction of Information on CVN

An amendment to a CVN application can be made to MyIPO via Form CR-4 together with payment of the prescribed fee. Clerical errors may be corrected via Form CR-6 along with payment of the prescribed fee.

Copyright can be protected under trade mark and related rights in Malaysia. The current scope of copyright laws are not limited based on trade mark or related rights.

Malaysia adopts the “first-to-use” principle. While it is not necessary to obtain trade mark registration in order to protect a trade mark, a registered trade mark owner will certainly have better rights as compared to the owner of an unregistered trade mark. Only a registered trade mark owner can bring an action for trade mark infringement.

See 2.3 Trade Mark Rights and 2.1 Types of Trade Marks on the different requirements for registering different types of trade marks.

The Trade Mark Register which contains details on all filed and registered trade marks in Malaysia is maintained by the Registrar of Trademarks and is publicly accessible through MyIPO’s IP online system.

While it is not mandatory to conduct searches for existing trade marks before applying to register a trade mark, it is advisable to do so.

Duration of Trade Mark Registration

A trade mark registration is valid for ten years from the date of registration and is renewable every ten years.

Late Renewal and Restoration

A renewal request must be made within six months of the registration’s expiry, or it will be deemed removed. The proprietor may request restoration within six months of removal or the registration ceases. Renewal only requires payment of the applicable fees.

Requirements and Procedures for Registration

Applications must be filed with MyIPO, either online or manually. An application may be made in a single application listing goods or services belonging to several classes (ie, a multi-class application).

The Registrar of Trademarks examines applications for compliance with the TMA 2019 and searches for conflicting trade marks. If the application meets registration requirements, it is accepted, and the Registrar of Trademarks will publish the application in the Intellectual Property Official Journal for opposition purposes. If no opposition is filed, the trade mark will be registered.

Filing Particulars

Among other things, the application must include:

• the applicant’s details: this is the name, address and nationality for individuals and company details for corporate entities;
• representation of the trade mark;
• specification of goods/services;
• claim of priority (if applicable); and
• declaration of use or intent to use.

Filing Fees

The fees are as follows:

• MYR950 for each class by adopting specifications from the pre-approved list;
• MYR1,100 for each class without adopting specifications from the pre-approved list; and
• an additional MYR50 for the second and each subsequent trade mark (up to a maximum of six) where a series of trade marks are being registered.

Other Requirements

Any person who claims to be the bona fide proprietor of a trade mark may apply for registration of the trade mark. Under Section 95(2) of the TMA 2019, non-residents or those not primarily conducting business in Malaysia must appoint a local registered trade mark agent to act on their behalf.

Malaysia does not require proof of actual use before applying to register a trade mark but applicants must declare their intent to use the trade mark with the specified goods/services in Malaysia.

As part of its examination, the Registrar of Trademarks conducts a search of the Trade Mark Register to identify existing registered or pending trade marks that may conflict with the application. If a conflict is found, a provisional refusal may be issued under Section 24(2) of the TMA 2019 for trade marks identical or confusingly similar to existing trade marks.

Under Section 24(3) of the TMA 2019, registration is also refused for trade marks that are identical or similar to well-known trade marks, whether registered or unregistered, if such use could cause public confusion or damage the well-known trade mark proprietor’s interests.

Additionally, Section 24(4) of the TMA 2019 provides that the Registrar of Trademarks will refuse the registration of a trade mark if its use in Malaysia is prevented either by virtue of any rule of law protecting an unregistered trade mark (passing off), or any right existing beyond the provisions of the TMA 2019, including under the CA 1987 or the Industrial Designs Act 1996.

Under Section 33 of the TMA 2019, an applicant may request an amendment to a trade mark application before registration, for issues such as changes in the applicant’s name or address, wording errors or obvious mistakes. The amendment must not substantially alter the trade mark’s identity or expand the goods or services covered.

Additionally, Section 32 of the TMA 2019 allows the applicant to withdraw the application or limit the goods or services by filing a request with the Registrar of Trademarks.

Section 37 of the TMA 2019 provides that a trade mark application or registration may, upon the request of the applicant or registered proprietor, be divided into two or more separate applications for the registration of a trade mark. The request will be made to the Registrar of Trademarks before or after the trade mark is registered in the form determined by the Registrar of Trademarks together with the payment of the prescribed fee.

Division applications are usually considered when objections are raised against certain goods or services in a multi-class or single class application. Dividing the application allows the uncontested goods or services to proceed to registration while addressing the objection to the contested items separately.

Consequences of Providing Incorrect Information

Section 103 of the TMA 2019, provides that any person who makes or causes a false entry to be made to the Trade Mark Register, knowing or having reasons to believe that the entry or thing is false, commits an offence and may be liable to a fine not exceeding MYR50,000, a term of imprisonment not exceeding five years or to both. 

The applicant is required to declare that the information provided in the application form is true to the best of their knowledge. In the case of error or mistake, the registered proprietor can request the Registrar of Trademarks correct any incorrect information on the trade mark application (see 4.7 Revocation, Change, Amendment or Correction of an Application).

Under Section 43(5) of the TMA 2019, any person having sufficient interest may apply to the court for the correction of any error or omission in the Trade Mark Register.

Rectifying Incorrect Information

In addition to the amendment procedure set out in 4.7 Revocation, Change, Amendment or Correction of an Application, Section 43 of the TMA 2019 provides that the Registrar of Trademarks may, at the request of the registered proprietor in the form determined by the Registrar of Trademarks together with the payment of the prescribed fee:

• correct an error or enter any change in the name, address or description of the registered proprietor;
• correct the details of description of the goods or services in respect of which the trade mark is registered without extending the rights given by the existing registration of trade mark in any way; or
• enter a disclaimer relating to the trade mark without extending the rights given by the existing registration of the trade mark in any way.

Section 43(6) of the TMA 2019 provides that any application for correction will not be made in respect of a matter affecting the validity of the registration of a trade mark.

See 2.2 Essential Elements of Trade Mark Protection for the absolute grounds of refusal of registration.

For the absolute grounds of refusal of registration for shape marks specifically, see 2.1 Types of Trade Marks.

Section 23 of the TMA 2019 lists additional grounds for refusal, including:

• likelihood of public deception or confusion, or contravention of the law;
• misleading the public about the nature, quality, or origin of goods/services; and
• trade marks contrary to public interest or morality.

Applicants can respond by filing a written reply or requesting an ex parte hearing, submitting evidence if needed. Failure to respond results in the application being deemed withdrawn.

Malaysia is a signatory to the Madrid system and matters pertaining to international applications under the Madrid system are dealt with in Sections 74 and 75 of the TMA 2019.

An application for an international registration may only be made by:

• a Malaysian;
• a body or corporation incorporated under the laws of Malaysia;
• a person domiciled in Malaysia; or
• a person who has a real and effective industrial or commercial establishment in Malaysia.

Filing a Trade Mark Opposition

An opposition must be filed with the Registrar of Trademarks within two months of the publication of the acceptance of the trade mark application. An extension of up to two months may be granted by the Registrar of Trademarks. The TMA 2019 does not provide a cooling-off period for resolution.

Revocation/Cancellation of Trade Marks

Under the TMA 2019, an aggrieved person may apply to the court for the revocation of a trade mark where within a period of three years following the date of issuance of the notification of registration, the trade mark has not been put to use in good faith in relation to the goods or services for which the trade mark is registered in Malaysia and there are no proper reasons for non-use.

In respect of revocation by the Registrar of Trademarks, the Registrar of Trademarks may revoke the registration of a trade mark within 12 months from the date of registration of the trade mark if the Registrar of Trademarks is satisfied that it is reasonable to revoke the registration, taking the following into account.

• Any relevant obligations of Malaysia under an international agreement or convention.
• Any special circumstances making it appropriate:
1. not to register the trade mark; or
2. to register the trade mark only if the registration were subject to disclaimer, conditions, amendments, modifications or limitations to which the registration was not made subject.

Revocation/Cancellation of Copyrights

Copyright protection in Malaysia is governed by the CA 1987 and there are no formal registration requirements. As such, revocation or cancellation is not applicable to copyrights in the same way it is to trade marks.

Grounds for Opposition

In Section 34(2) of the TMA 2019, the grounds for opposition are as follows.

• The trade mark falls within the prohibition on registration (absolute grounds or relative grounds).
• The applicant is not the proprietor of the trade mark.
• The opposed trade mark conflicts with a well-known trade mark.

An opponent must further establish all of the requirements, namely, the opposed trade mark, if registered, would:

• indicate a connection between those goods or services and the proprietor of the trade mark;
• create a likelihood of confusion on the part of the public because of such use by the opposed trade mark; and
• likely damage the interests of the proprietor of the trade mark.

Grounds and Remedies for Revocation/Cancellation of Trade Marks

In addition to the provisions in 5.1 Timeframes for Filing an Opposition or Cancellation, a trade mark can be invalidated or revoked if it has become generic, misleads the public, breaches absolute grounds for refusal, conflicts with an earlier right or was obtained by fraud or misrepresentation. The court, not the Registrar of Trademarks, has jurisdiction to invalidate a trade mark.

Filing an Opposition

Any person may file a notice of opposition in the form determined by the Registrar of Trademarks together with the payment of the prescribed fee and send the notice of opposition to the applicant within the prescribed period from the date of the publication of the acceptance of an application for the registration of the opposed trade mark.

It is not necessary to appoint an agent for opposition proceedings. Under Section 95(2) of the TMA 2019, persons who do not reside or carry on business principally in Malaysia will have to appoint and authorise a local trade mark agent to act on their behalf.

Average Fees for Filing an Opposition

The average fees for a trade mark opposition are MYR950 for each class and the legal fees vary depending on the complexity of the matter.

Filing Revocation/Cancellation Proceedings

The applicant for revocation must be an “aggrieved person”. In Mesuma Sports Sdn Bhd v Majlis Sukan Negara [2015] 9 CLJ 125, an “aggrieved person” was considered to be a person who had used their mark as a trade mark or who had a genuine and present intention to use their mark as a trade mark in the course of trade which was the same as or similar to the registered trade mark that the person wanted to have removed from the Trade Mark Register. The person had to be someone who had some element of legal interest, right or legitimate expectation in its own mark which was being substantially affected by the presence of the registered trade mark. The interest and right also had to be legal and lawful.

Opposition Procedure

Upon receiving a notice of opposition, the applicant must file a counterstatement, failing which the application will be deemed withdrawn. The opponent and the applicant are then required to submit evidence in support of the opposition and application for registration of the trade mark respectively. Once this is completed, the Registrar of Trademarks will request the parties submit written submissions. The Registrar of Trademarks will decide to either refuse registration, register the mark or impose conditions. Appeals against refusals or conditional registrations can be made to the court.

Revocation/Cancellation Proceedings

Under Section 46 of the TMA 2019, an aggrieved person may apply to the court for the revocation of trade marks.

Partial Revocation

Section 46(4) of the TMA 2019 provides for partial revocation, where use has been made of a trade mark in respect of only some of the goods or services for which the trade mark is registered. In this situation revocation will only relate to those goods or services.

Any person aggrieved by the decision of the Registrar of Trademarks may appeal to the court. In the context of opposition proceedings, any appeal to the court against the Registrar of Trademarks decision will be made within one month from the date on which the Registrar of Trademarks written grounds of decision is issued to the parties.

For appeals against any refusal issued by the Registrar of Trademarks, the applicant has two months from the date of a total provisional refusal to request the Registrar of Trademarks written grounds for the decision, accompanied by the prescribed fee. The date of issuance of the written grounds is deemed the date of the Registrar of Trademarks decision for court appeals, which must be filed within one month of that date.

For the procedure and timescales for other appeals, specifically for infringement proceedings, see 11.1 Appellate Procedure and 11.2 Timeframes for Appealing Trial Court Decisions.

The TMA 2019 does not contain a provision that prevents an applicant from filing an amendment to the trade mark application during revocation or cancellation proceedings. However, see 4.9 Incorrect Information in an Application on the limitations on amendments.

The TMA 2019 does not specifically provide that proceedings involving invalidation and infringement can be heard together. However, as invalidation proceedings are also heard before the High Court, it is common for both invalidation and infringement actions to be consolidated (if they were commenced separately) and heard together, or for the party seeking invalidation to be heard first.

Under Section 47(6) of the TMA 2019, an aggrieved person can apply to the court to invalidate a trade mark registration on the ground of fraud. The TMA 2019 does not provide a special procedure for these proceedings. Alternatively, an aggrieved person can apply to the court to have pending trade mark applications suspended pending fraud investigations.

If the invalidation proceedings succeed, the trade mark registration will be invalidated.

Trade Mark Assignments

Assignments of trade mark applications/registrations are required to be in writing (usually by way of a deed of assignment) to be effective. These assignments may be done with or without the goodwill of the trade mark. Partial assignments are also recognised, whereby all goods and specifications to be assigned should be clearly listed in the deed.

Aside from assignments, trade marks are also transmissible including by way of any operation of law or upon the death of a trade mark owner.

All assignments and transmissions must be recorded with MyIPO. If they are not, the transaction will be ineffective against a person acquiring a conflicting interest in the trade mark.

Copyright Assignments

Assignment of copyrights must be in writing to be deemed valid in Malaysia. Due to the lack of a copyright registration regime in Malaysia, there is no legal requirement to record the assignment with MyIPO.

Copyrights are also transmissible, which generally include situations involving the death of a copyright owner and is executed by way of testamentary disposition.

All assignments/testamentary dispositions may be limited to only apply to acts which the copyright owner is exclusively in control of, the period of the copyright or a specific country or geographical area.

Trade Mark Licences

Licences for trade marks may be exclusive, non-exclusive, general or limited (in respect of goods and services or locality) and will only be deemed effective provided it is in writing and signed by or on behalf of the licensor.

Registered trade marks

By default, a licence to use a registered trade mark will be binding on every successor in title to the licensor’s interest unless:

• a person who has in good faith and without any notice of the licence, given valuable consideration for the interest in the registered trade mark; or
• the licence provides otherwise.

Trade mark licences may be perpetual so long as the licence provides for the same and the registration remains valid.

Although not mandatory, recording the licence with MyIPO is highly recommended as this will constitute public notice of the licence, thereby strengthening the rights of the licensee.

Unregistered trade marks

The rights of licensees of unregistered trade marks are limited to those provided under common law.

Copyright Licences

Licences for copyrights are required to be made in writing before deemed to be valid and effective. The licence need not be recorded as Malaysia does not have a copyright registration regime.

In any event, the licensor is free to determine the nature and scope of copyright to be licensed. The period of licences can be negotiated between parties so long it is within the awarded term of protection stipulated under the CA 1987 (see 3.5 Term of Protection and Termination).

See 6.1 Assignment Requirements and Restrictions and 6.2 Licensing Requirements or Restrictions.

Generally, claims for both copyright and trade mark infringement must be commenced within six years from the act of infringement. A claim not brought within the prescribed time may be considered time barred.

Where there is an ongoing infringement, both the CA 1987 and the TMA 2019 provide that the limitation period would accrue from the date of the infringement. Otherwise, a defendant would be able to rely on other defences such as acquiescence, laches or delay to defend a claim for copyright or trade mark infringement.

Trade Mark Infringement

A trade mark would need to be registered in Malaysia before a trade mark owner can bring a claim for trade mark infringement. Claims of infringement of unregistered trade marks are usually brought under the tort of passing off.

Under usual circumstances, it would constitute an infringement if a person uses a sign which is identical to the trade mark in relation to goods or services which are identical with those for which it is registered, without the consent of the registered proprietor under Section 54 of the TMA 2019. When the trade marks are similar and it is used in relation to similar goods or services, there is a further need to establish the likelihood of confusion to the public.

Although it is more common for direct infringement suits to be brought against an infringer, the TMA 2019 also expands the scope of infringement to include secondary users. As such, the act of even stocking goods bearing an infringing mark for the purposes of selling or offering for sale to the public, could be classed as trade mark infringement in Malaysia.

Copyright Infringement

Copyright does not need to be registered in Malaysia before a claim for infringement is brought in court by a copyright owner.

In the Malaysian case of Megnaway Enterprise Sdn Bhd v Soon Lian Hock (sole proprietor of the firm Performance Audio & Car Accessories Enterprise) [2009] 3 MLJ 525, the necessary elements needed to prove copyright infringement were:

• a sufficiently similar objective between the original work or a substantial part thereof and the infringing copy;
• a causal connection between the original work and the infringing copy, that is, the infringing copy must have been copied from the original work, whether directly or indirectly; and
• that what had been infringed must constitute a substantial part of the original work.

Under Malaysian copyright laws, there is no distinction between direct infringement and contributory/vicarious infringement. So long as an article infringes a copyright and all elements of infringement are shown, liability for copyright infringement can be found by the court.

Dilution and Cybersquatting

A claim for dilution is uncommon in Malaysia and there has not been a case brought in court for trade mark dilution. However, the Malaysian courts have awarded damages for the dilution of the goodwill of a trade mark owner.

Cybersquatting usually relates to the registration of a domain name. Where a domain name is identical or similar to a registered trade mark, or is being used in bad faith, an applicant can file a complaint with the Asian Domain Name Dispute Resolution Centre at its Kuala Lumpur office.

Copyright Management Information

There are no laws in Malaysia governing copyright management information and it is not defined under the CA 1987.

Copyright Infringement 

Some of the factors that should be considered in determining whether use of copyright constitutes infringement are:

• the nature of the copyrighted work;
• whether copyright subsists in the work;
• whether there is any evidence of substantial reproduction of the copyrighted work;
• whether a causal link can be established; and
• expert testimony.

Trade Mark Infringement

The factors to determine trade mark infringement are as follows:

• where trade marks are not identical and are used in relation to similar goods or services, whether there is likelihood of confusion among members of the public;
• whether there was prior use of the trade mark by the alleged infringer; and
• whether there is any evidence of a licence provided to the alleged infringer.

Trade Mark Infringement Lawsuit Requirements

To file a trade mark infringement lawsuit, the trade mark would need to be registered in Malaysia. It is common (although not mandatory) for a cease and desist letter to be issued to the infringer first prior to the commencement of legal proceedings.

Copyright Infringement Lawsuit Requirements

It is not mandatory for a copyright to be registered in Malaysia. Although a CVN or a statutory declaration would constitute prima facie evidence of copyright ownership, there are other avenues to prove ownership of copyright, especially through witness testimony during a trial.

Initiation of Civil Proceedings

Claims for copyright or trade mark infringement are usually initiated at a dedicated IP court in the High Court in Malaya.

Costs 

Trade mark infringement

Typical incidental costs prior to filing a lawsuit would include a cease and desist letter as a means to offer an infringer the chance to resolve the matter out of court.

Copyright infringement

For copyright infringement claims, typical costs that would arise prior to the filing of a lawsuit are for the affirmation of a statutory declaration by the copyright owner in line with Section 42 of the CA 1987. This is to allow the copyright owner to have prima facie evidence of copyright ownership. Costs that would arise here would be the payment for affirming the statutory declaration before a Commissioner for Oaths.

Need for Legal Representation

It is preferable for parties to be legally represented by a solicitor in Malaysia should they choose to initiate a claim for copyright or trade mark infringement.

Foreign Owners

Trade mark

As trade marks are territorial in nature, a foreign owner would need to register the mark in Malaysia prior to initiating legal proceedings for infringement, unless it is a well-known mark.

Copyright 

Copyright will usually subsist if the work is made in Malaysia. However, copyright protection is afforded and can be enforced in Malaysia if the works were first produced in a Berne Convention member country.

It is uncommon for a defendant or a potential defendant to file for a declaratory judgment proceeding in Malaysia, especially for non-infringement, although that doesn’t necessarily mean that it cannot be done.

However, it would be commonplace for a defendant to merely defend any action of copyright/trade mark infringement rather than initiating a lawsuit for non-infringement.

A defendant can file for a protective order in Malaysia, especially where it concerns the confidentiality of certain documents. When a protective order is granted by the High Court, it would limit the disclosure of certain documents or the redacting of documents where confidentiality of the documents is an issue.

In Malaysia, trade mark or copyright infringement claims are usually brought before the High Court. Parties may opt for judge-led mediation to resolve the matter quicker and reduce costs.

Decisions on trade mark or copyright infringement are usually made by the High Court which is the Court of First Instance.

Counterfeit Goods

Counterfeit goods are defined under the TMA 2019 as goods that are infringing goods in relation to a registered trade mark and the sign borne by the goods, or their packaging is a counterfeit trade mark. A counterfeit trade mark is defined as being a sign that is identical with the registered trade mark, is calculated to deceive, is applied to goods or services without the express or implied consent, conditional or otherwise of the registered proprietor and falsely represents that the goods or services are genuine goods or actual services of the registered proprietor or a licensee of the registered trade mark.

A trade mark owner will need to lodge a complaint with the Ministry of Domestic Trade and Costs of Living for the enforcement division to initiate an investigation. In the event the trade mark and the counterfeit are not identical, a Registrar of Trademarks verification will be required under Section 112(3) of the TMA 2019 for the purposes of the investigation. If the evidence provided by the trade mark owner is sufficient, the Ministry of Domestic Trade and Costs of Living will commence a raid action against the counterfeiter. Criminal proceedings will then be brought against the counterfeiter for the sale of the counterfeit product.

The trade mark owner is also at liberty to initiate civil proceedings against the counterfeiter for trade mark infringement.

Bootlegging

Although not generally referred to as bootlegging in Malaysia, bootlegging is illegal in Malaysia (be it bootlegged alcohol or recordings). Similar to the process involving counterfeit products, a complaint will need to be made to the Ministry of Domestic Trade and Costs of Living for an investigation to be commenced by the enforcement division. This will likely end up in a raid action commenced by the enforcement division which would lead to criminal proceedings.

A copyright owner would also be able to initiate a civil lawsuit against any bootlegged products.

See 7.5 Lawsuit Procedure.

Trade Mark Infringements

Infringement proceedings can only be initiated in the event the trade mark is registered. Claims of infringement of unregistered trade marks are usually brought under the tort of passing off.

Copyright Infringements

There is no mandatory requirement for a copyright owner to register its copyright in Malaysia. However, a voluntary notification of a copyright or a statutory declaration showing copyright ownership under Section 42 of the CA 1987 would be prima facie evidence of ownership. This would prevent voluminous documents having to be brought to court to prove copyright ownership. These attract statutory presumptions that also assist in obtaining injunctive reliefs.

The burden would then shift to the infringer to make a positive assertion that the ownership of the copyright does not belong to the plaintiff.

Trade Mark Infringement Costs 

These are between MYR100,000 and MYR150,000 (USD20,000 and USD35,000).

Copyright Infringement Costs 

These are between MYR200,000 and MYR250.000 (USD40,000 and USD50,000).

Factors Impacting Costs

Various factors can affect infringement proceeding costs. These include:

• the length of the trial;
• the number of witnesses and experts (if any);
• pre-trial/interlocutory applications being filed in court;
• conducting a public survey (specifically for trade mark infringement);
• an application for interim injunctions/Anton Piller Orders; and
• defending a counterclaim (if any).

The usual defence that a defendant presents is that there is non-infringement of the trade mark, ie, the trade marks are distinguishable, unlikely to deceive or cause confusion to members of the public or that the trade mark was not “used” as a trade mark.

However, Section 55 of the TMA 2019 provides statutory defences which include:

• when a party uses their name or the name of their place of business in good faith;
• when a party uses a sign to indicate the kind, quality, intended purposes, value, geographical origin or other characteristics of goods or services in good faith; and
• where the use is for a non-commercial purpose.

Defences to copyright infringement can be found in Section 13(2) of the CA 1987. They include:

• fair dealing for purposes of research, private study, criticism, review or reporting of news or current news provided that it is accompanied by an acknowledgment of the title of the work and its authorship (except where the work is in connection with doing any acts for the purposes of non-profit research, private study and the reporting of current events by means of a sound recording, film or broadcast);
• acts by way of parody, pastiche or caricature; and
• inclusions in a film or broadcast of any artistic work situated in a place where it can be viewed by the public.

Exhaustion of Trade Mark Rights

The doctrine of exhaustion was analysed by the Malaysian Federal Court in the case of Guangzhou Light Industry & Trade Group Ltd & Ors v Lintas Superstore Sdn Bhd [2022] 4 MLJ 339 in the context of parallel imports. In this case, the Federal Court held that importation of products into Malaysia and their subsequent sale cannot be done without the consent of the trade mark owner. However, this is only in the context of parallel imports.

Based on the decision by the Federal Court, it would appear that the courts have taken a restrictive approach to the applicability of the doctrine of exhaustion where consent from the trade mark owner would need to be obtained before a defence of exhaustion can be invoked.

Exhaustion of Copyright

Section 13(1)(a) of the CA 1987 gives a copyright owner the exclusive right to control the distribution of copies of the copyrighted work. However, this is limited to the first distribution of the work, be it in a physical or digital format. Any subsequent distribution of the work would likely be caught under the doctrine of exhaustion. At present, there is no distinction between physical distribution and the distribution of digital content.

Permanent Injunctions

Judges always have discretion in ordering remedies, especially where it concerns any interim or permanent injunctions. For permanent injunctions, the courts would usually award a trade mark/copyright owner a permanent injunction against an infringer (so long as it is pleaded as a relief sought) once infringement is established.

Interim Injunctions

In general, a party seeking an interim injunction would need to satisfy the test laid down in the UK case of American Cynamid Co. v Ethicon Ltd [1975] AC 396, which was adopted and applied in Malaysia in the case of Keet Gerald Francis Noel John v Mohd. Noor Bin Abdullah & Ors [1995] 1 MLJ 193 which specified the following need to be established:

• whether there is a bona fide serious issue to be tried;
• where the balance of convenience lies; and
• whether damages are an adequate remedy.

Furthermore, there is also a usual undertaking as to damages provided by a plaintiff in the event the plaintiff fails to prove their case or obtain a judgment for infringement.

Opposing Interim Injunctions

Some of the grounds to oppose an interim injunction are:

• delay;
• suppression of material facts; and
• no triable issue or serious issue to be tried.

An assessment of damages or an account of profits is usually done after an infringer is found liable. This would be done in separate proceedings.

There are a number of different ways that the court may award damages including calculating any royalty that would have been paid or damages for licence fees lost. Courts also have regard to the flagrancy of the infringement.

In the event the infringement is caused by a direct competitor, there is also a route for an account of profits to be done, ie, the loss in sales that the owner of the trade mark/copyright suffered and the profits gained by the competitor.

Under the CA 1987, statutory damages for an infringement, as stated under Section 37 of the CA 1987 would be no more than MYR25,000 for each infringing work and not more than MYR500,000 in total.

The losing party would have to pay the costs of litigation including the court imposed tax (otherwise known as allocator fees). Although a litigant would usually expect to be able to recover 100% of the legal fees paid to solicitors, it is unlikely that the court would allow a full recovery of these legal fees.

Ex parte applications such as ex parte interim junctions, Anton Piller Orders, delivery up orders or doorstep delivery up orders are common relief avenues a litigant can pursue without notifying a defendant.

Under the Rules of Court 2012, the ex parte injunction will automatically lapse after 21 days and an inter partes hearing would be fixed within 14 days from the date the ex parte order was granted.

An aggrieved person can lodge complaints to the enforcement division of the Ministry of Domestic Trade and Costs of Living. Once a complaint has been made, the enforcement officers will usually carry out an investigation to initiate an enforcement raid action against an infringer.

Some of the details and/or evidence required by the enforcement division prior to any raid being conducted are:

• details of the owner of the trade mark/copyright;
• details of the infringing act(s);
• any surveillance report conducted;
• authorisation from the owner to the authorised representatives; and
• where it involves foreign brand owners, a power of attorney.

Decisions for both trade mark and copyright infringement claims can be appealed from the High Court to the Court of Appeal.

This is typically done by:

• filing a notice of appeal at the High Court;
• filing the records of appeal and memorandum of appeal at the Court of Appeal; and
• filing written submissions at the Court of Appeal.

The records of appeal includes:

• the pleadings for both parties (statement of claim, defence, reply to defence);
• documents used by parties during the trial (bundle of documents);
• notice of appeal;
• memorandum of appeal (essentially the grounds of appeal); and
• grounds of judgment from the High Court.

Court of Appeal decisions can be further appealed to the Federal Court. However, this would typically only happen where there are novel issues of law in the lawsuit.

An appeal from the High Court to the Court of Appeal will need to be made within 30 days from the date of the High Court decision. The appeal process at the Court of Appeal can take up to a year from the date of the High Court decision. However, this can be reduced by filing a certificate of urgency at the Court of Appeal for an earlier hearing date.

With the rapid development of artificial intelligence (AI), one prominent issue up for discussion is the position of the law on AI in connection with the authorship of non-human entity generated work. Most commonwealth nations, including Malaysia, have yet to adopt legal measures to address this topic. The topic becomes more critical given the recent decision by the United Kingdom’s Supreme Court in the case of Thaler v Comptroller-General of Patents, Designs and Trademarks.

The decision is an eye-opening moment for change to be made to catering to disputes on authorship of non-human entity generated work. There is a clarion call for countries including Malaysia to answer and adjust and adapt to this by passing new laws or at the very least amending the current legal structure to accommodate the glaring presence and emergence of AI in the community which may affect industries across the board.

Nonetheless, the Ministry of Science, Technology and Innovation in Malaysia, on 20 September 2024 launched the National Guidelines on AI Governance & Ethics to support the implementation of the Malaysian National Artificial Intelligence Roadmap 2021-2025. Although it is still unclear as to what mechanism can be adopted to address the legal complexities or intricacies involving AI, it remains a hopeful possibility that Malaysia may start the ball rolling in introducing new laws which will adequately regulate the legal problems involving AI.

In the meantime, it is likely that when the need arises, the Malaysian courts will rely on utilising or citing interpretations and/or precedents of other jurisdictions in this area.

Trade Mark and Copyright Infringement via the Internet

Recent amendments to the CA 1987 and the TMA 2019 have expanded the scope of infringement proceedings to extend liability to secondary infringers (including internet service providers (ISPs)).

While Section 43H of the CA 1987 expressly provides for a takedown mechanism (by way of notification) for electronic copies of works published on the internet, this is not mirrored in the TMA 2019.

Nonetheless, there is a need to be cautious as “use” of a trade mark for purposes of infringement proceedings is broadly defined under the TMA 2019. Given this, it is important that sufficient takedown procedures and guidelines, as well as adequate screening and filter mechanisms are adopted by ISPs to reduce the possibility of being liable for infringement of these intellectual property rights.

Use of Trade Mark on the Internet

Regulation 6 of the Regulations states that in relation to the use of a sign or trade mark on the internet, the provisions provided in the TMA 2019 and the Regulations and the Joint Recommendation must be taken into account.

Importance of Trade Mark Registration for Use on E-Commerce Platforms

Several online marketplaces require a valid trade mark registration certificate to enable sellers to verify their status as brand owners, authorised sellers or to provide evidence of selling authentic products on their platform. Therefore, as a precautionary measure, it is advisable for business owners to secure a valid trade mark registration before expanding their business to online platforms.